Design Examination in Australia – Process & Timeline

Registering your design is a great first step in protecting it, but registration alone doesn’t give you the right to stop others from using it. To enforce your rights, your design needs to be certified. Certification is only granted after a formal examination by IP Australia, i.e. a process that checks whether your design meets all the legal requirements for protection.

What is Design Examination?

Design examination is the process where an IP Australia examiner assesses your registered design to determine if it meets the legal standards for certification. Specifically, the examiner will check-

• Newness and distinctiveness, i.e. whether your design is different from anything publicly available before your application’s priority date (sec 15 Designs Act).
• Eligibility for registration, i.e. whether your design is not of a type excluded by law (sec 43(1), reg 5.02, sec 65(2)(b)).
• Any grounds for revocation, i.e. such as non-compliance with formalities or prior disclosure.

If your design passes, you’ll receive a Certificate of Examination. This certification allows you to enforce your rights against infringers in court.

Who Can Request an Examination?

An examination can be requested by-

• The design owner (most common)
• A third party, such as a competitor, supplier, or other interested party (sec 63(1))
• The Registrar, on their own initiative (rare)
• A court, via an order to the Registrar (rare)

Anyone requesting examination must submit the correct form, pay the fee, and may also provide evidence or arguments about the design’s newness and distinctiveness.

When Can You Request an Examination?

You can request an examination at any time after your design is registered. There is no deadline to request it, but certain business or legal situations make early examination advisable, i.e. for example, before launching a product, entering a licensing deal, or pursuing infringement action.

How the Examination process works?

The process isn’t always strictly linear, i.e. it can involve back-and-forth communication, requests for more information, and re-examinations. The key steps are-

Step 1, i.e. Request for Examination- The applicant/owner (or a third party) files the request through their IP attorney or professional and pay the required fee. If it’s a third-party request, they must pay half the fee, and the owner is invited to pay the other half.

Step 2, i.e. Initial Examination- The examiner searches the prior art base to check for earlier designs. They verify that the design isn’t excluded from registration and that it meets the “new and distinctive” standard. Here, the examiner also considers any material submitted by the requester under sec 69.

Step 3, i.e. First Examination Report- If issues are found, the examiner issues an Adverse Report explaining the grounds for possible revocation. If no issues are found, the examiner either issues a Certificate of Examination (if the request came from the owner and no other parties have an interest) or a Notice of Intention to Certify (if there are other parties on record).

Step 4, i.e. Responding to Adverse Reports- You have 6 months from the first examination report to address all issues. You can request extensions if needed, but without a response or resolution, your registration will cease. Such responses may involve legal submissions, evidence, or amendments to the registration.

Step 5, i.e. Further Reports or Re-Examination- The examiner may issue further reports if issues remain or if new material is submitted by a third party. Multiple examination requests can be handled simultaneously, and certification won’t be granted until all grounds for revocation across all requests are resolved.

Step 6, i.e. Certification or Revocation- If the examiner is satisfied, they issue a Certificate of Examination, certifying your design. If issues remain and are upheld after hearings (if requested), the registration may be revoked.

Third-Party Examination Requests

In cases where a third party initiates the examination of a registered design, the process begins with the Customer Experience Group (CEG) at IP Australia, which oversees all pre-examination activities. Once the request is received, it is prioritized and fast-tracked for examination.

The examiner then conducts the review following standard procedures, taking into account any relevant materials submitted by the third party under section 69. If the examiner identifies valid grounds for revocation, an adverse report is issued to the design owner. This report is also shared with the third party, accompanied by a formal covering letter in accordance with regulation 5.03(8).

Should the registered owner respond but fail to adequately address the concerns raised, a subsequent adverse report is issued, again following the usual protocol and shared with both parties. The third party may also submit a response, which the examiner is permitted to consider, though not directly reply to. Any pertinent information from the third party’s submission may be referenced in further adverse reports, and a copy of the third party’s response must be included in such reports.

If, after examination, no grounds for revocation are found, the examiner will issue a standard report indicating the intention to certify the design. Both the design owner and the third party are notified of this outcome. The notification will confirm that the design has been examined (as per section 67(2)(a)), outline any required amendments if the report is conditional (section 67(2)(b)), state the intention to issue a certificate of examination (section 67(2)(c)), and inform both parties of their right to request a hearing before a final decision is made (section 67(3)). A specific deadline for requesting a hearing is also provided.

If neither party requests a hearing by the stated deadline, the examiner proceeds to certify the registration. However, if the third party does request a hearing, the Designs Administration team first processes the request, followed by the Oppositions and Hearings team. Should the third party submit additional arguments or materials under section 69 before the examination period concludes, the examiner will assess whether a new or further adverse report is warranted.

Once the deadline for requesting a hearing has passed without further submissions, the examiner finalizes the certification. At this stage, a ‘statement of reasons’ must be included with the notification, especially if the file contains third-party submissions under section 69. This statement is crucial for documenting the rationale behind the examiner’s decision.

Expedited Examination

In certain situations, one can request that IP Australia prioritize their examination. This is granted at the Registrar’s discretion when it’s in the public interest, or when there are special circumstances.

To initiate a request for expedited examination, the applicant must clearly outline the relevant grounds supporting their appeal. This submission is treated as a formal declaration by the owner, affirming that the reasons provided genuinely reflect their current circumstances.

Once the request is submitted, the Customer Experience Group (CEG) will review both the application and the accompanying justification. Based on their assessment, they will determine whether the request meets the necessary criteria for approval. The decision will then be communicated to the applicant. If the request is approved, CEG will prioritize the case and forward it to the examiners for accelerated handling.

Examiners, upon receiving such cases, are expected to give them precedence over standard applications and make every effort to complete the examination process more swiftly.

For the Registrar to approve an expedited examination, they must be reasonably convinced, i.e. based on the owner’s explanation, that the request serves either the public interest or arises from exceptional circumstances that warrant urgency. These circumstances may include, but are not limited to, specific commercialization timelines, ongoing or anticipated infringement issues, or licensing arrangements that depend on timely examination.

Timelines to Keep in Mind

While exact processing times can vary, here’s a general outline-

• From request to first report- Several weeks to a few months (faster if expedited).
• Response to adverse report- 6 months from the date of the first report.
• Longer completion period- May apply if new grounds for revocation are raised or if court proceedings/hearings are involved.
• Certification issue- Usually within days to weeks after the final decision, provided no hearing is requested.

A last-minute response close to the 6-month deadline may be paired with a precautionary hearing request to protect your rights in case the examiner still finds grounds for revocation.

Outcomes of Examination

The examination of a registered design typically concludes with one of two outcomes, i.e. either the examiner determines that there are no grounds for revocation, or they find that any existing grounds can be resolved through amendments to the Register as proposed by the owner (as per section 66(3)). Based on this assessment, the examiner will proceed by either issuing a certificate of examination immediately or sending out a formal notice of intention to certify under section 67.

A certificate of examination is issued without delay when the examination was initiated by the design owner and there are no other parties listed in the Register with a legal interest in the design, such as co-owners, licensees, or holders of a security interest.

That said, if there are other stakeholders recorded in the Register, the examiner will issue a notice of intention to certify. This notice is a formal communication from the Registrar indicating the intent to certify the design. It is sent to all relevant parties, including the registered owner(s), any third party who initiated the examination, and others with recorded interests in the design. The notice outlines the reasons for certification, details any proposed amendments necessary to remove revocation concerns, and sets a deadline, i.e. typically one month, for recipients to request a hearing. This hearing option allows third parties to raise objections, such as claims that the design lacks novelty or distinctiveness, or should not have been registered under section 43.

If no hearing request is received by the deadline and the examiner remains confident in the design’s eligibility, the certificate of examination is issued shortly thereafter. However, if a request for an extension is submitted after the deadline but before the certificate is finalized, it must be considered, in line with precedents such as British Sky Broadcasting v Registrar of Trade Marks.

In cases where a hearing is requested, i.e. whether in writing or orally, the examiner will document the request, issue an invitation to pay the hearing fee, and notify all relevant parties who received the original notice of intention to certify. This ensures transparency and gives all stakeholders an opportunity to participate in the final decision-making process.

Why can early certification be crucial?

While it’s possible to wait and only certify when needed, early certification has major benefits like stronger enforcement rights, i.e. you can act against infringers immediately. You also get better commercial leverage, i.e. certification can increase the value of your design for licensing, sale, or investment and also reduced risk, i.e. certification confirms validity before you commit to manufacturing and marketing.

Navigating the design examination process requires careful handling of deadlines, legal arguments, and procedural rules. Our team can prepare and lodge examination requests, respond to adverse reports with tailored legal arguments, manage third-party challenges, request expedited examination where needed or guide you through hearings and appeals if required

By managing the process from start to finish, we help you secure certification quickly and with minimal disruption to your business.

If you’re ready to certify your design and enforce your rights, contact us today to start the examination process.